Ron Laurie

8/14/2019 Ron Laurie

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The Role of Claims Constructionin Patent Valuation

Advanced Topics in IP Valuation and Analysis

Presented by the IP Societyin conjunction withTownsend and Townsend and Crew, LLP & QuantAA

Palo Alto - July 13, 2004

Ron LaurieManaging Director Inflexion Point Strategy, LLC


2/21

Patent Valuation

Valuation Contexts Transaction Based

M&A Price Allocation, Exchange Ratio, Premium

Technology Divestiture Spin Out (Newco) vs. Spin-Off (sale)

Joint Venture or Strategic Alliance In-kind contribution value

Venture Investment Decisions Angels, VCs, Private Equity

Patent Brokerage - Purchase/Sale of IP only (vs. technology)

License Fees - Paid-up, Upfront payments & royalty rates

Collateralization and securitization of IP

Inter-Affiliate Transfers Transfer pricing issues


3/21

Patent Valuation

Valuation Contexts - Non-Deal

Strategic IP Position Enhancement IP Aggregation

Purchase vs. Exclusive License vs. Non-exclusive License

Litigation

Damages - greater of infringers profits or reasonable royalty

Settlement value

R&D Investment Make vs. buy decisions, Determination of IP-ROI

Portfolio Management Foreign filing and prosecution costs, Maintenance fees

Charitable Donations Tax benefit


4/21


5/21

Patent Valuation

SFAS 141/142 - Categories of Identifiable Intangibles

Marketing-related: trademarks, trade dress, domain names, non-competes, etc.

Customer-related: customer lists, contracts and non-contractual relationships

Artistic-related: print publications, video, music, photos, etc.

Contract-based: license agreements, employment contracts, broadcast rights, etc.

Technology-based: patented technology, trade secrets, software, databases, maskworks, unpatented technology (non-T/S know-how)


6/21

Patent Valuation

Relative Importance of Intangible assets in Company Value

S&P-500 Market to Book (M/B) Value Ratio - 1970s - 1:1; 2000 - 6:1 (83.3%)

Coopers & Lybrand (97) - 2/3 of $7 trillion market value of all public companiesis attributable to intangible assets

Examples (2000 figures): Merck - 93.5%, Microsoft - 97.8%, Yahoo - 98.9%

Intangible Assets include:

Intellectual Capital - undocumented know-how, customer loyalty,management expertise, inter-company relationships, etc.

Intellectual Property - Legally enforceable rights in patents,copyrights, trademarks, trade secrets, mask works, databases,domain names, etc.


7/21

Patent Valuation

Why are IP assets more difficult to value than tangible assets?

Historically, no public trading markets (but this is changing, e.g., yet2com)

Terms & Conditions vary widely.

IP assets are inherently dissimilar

IPR transfers are often motivated by unique strategic considerations

Details of IPR transfers are usually not widely disseminated


8/21

Patent Valuation

The Three Basic Valuation Methodologies

A. Cost -

Based on cost to replicate, e.g., independently develop (lessfunctional or economic obsolescence)

Advantage: Easy to calculate

Problems:

No relationship to utility or market value

Independent development is not a defense to patentinfringement


9/21

Patent Valuation

The Three Basic Valuation Methodologies - cont .

B. Market -

Based on market transactions involving comparable assets(with adjustment for differences)

Requires: (a) an active market; (b) sufficient number of similar exchanges; and (c) publicly available price information

Sources: M&A Databases, SEC Disclosures,, Subscription-based services(e.g., NERAC), Trade Magazines, Industry websites, etc.

Problems: What is comparable IP? Ignores Deal Leverage


10/21

Patent Valuation

The Three Basic Valuation Methodologies - cont .

C. Income -Discounted Net Cash Flow (royalties/profits/savings)

Price Premium (vis--vis comparable goods without IP)

Production Cost Savings (contribution of inputs)

Relief from Royalty (what rate?)

Residual Earnings (requires disaggregation of intangible assets)

Adjusted for technology and market risk (15-70%) and financing cost

Problem: Future uncertainty, especially. if no track record (i.e., notapplicable to new IP or strategic IP held for competitive

advantage)


11/21

Patent Valuation

IP-Specific Valuation Methodologies

The Twenty Five Per Cent Rule

Industry Standards

Rating & Ranking

Surrogate Measures

Monte Carlo Analysis

Real Options

Other


12/21

Patent Valuation

IP-Specific Valuation Methodologies - Cont.

The Twenty Five Per Cent Rule : Licensor should receive 25% of licenseesgross profit attributable to the licensed technology

Apportionment not valuation rule

Rule of Thumb only - Adjust percentage up or down to reflect partiesrespective investment and risk in licensed technology

Better for process than product technology - Allocation problems

Crude guideline for order of magnitude royalty rate

Opinion varies on usefulness of rule


13/21

Patent Valuation


Industry Standards -

Derived from Market approach

References royalty rates (or purchase prices) in similar past transactions

Reflects Industry, technology, degree of innovation, etc.

Typical rates:Infotech: hardware - 1-5%, software - up to 25%, games - up to 50%Consumer electronics: 1-3%, Biotech: 8-12% (w/large upfront fees),Automotive: 2-5%, Health Care: 2-10%


14/21

Patent Valuation


Rating & Ranking -

Compares relative value of IP assets on a subjective or objective scale

Often used in conjunction with Industry Standards method

Five components; (a) scoring criteria; (b) scoring system; (c) scoring scale;(d) weighting factors; and (e) decision table

15 Georgia-Pacific factors is often used set of comparative criteria


15/21

Patent Valuation

Surrogate Patent Value Indicators

Patent portfolio data -

Number of patents issued to company (reflects R&D level and filingactivity, but not necessarily quality)

Payment of patent maintenance fees (does not necessarily reflecthow well patent portfolio is being managed)

Forward prior art citations (reflects importance of disclosure, notnecessarily coverage, i.e., claims scope)

Royalty income -

Studies indicate that investors value a dollar of patent royalty 2-3 times higher than a dollar of ordinary income (higher profit margin, more stable income)


16/21

Patent Valuation

Monte Carlo Analysis

Refinement of Income method

Assigns a range of values to variables used in calculating NPV, e.g.,

Price variables: price premium, additional unit salesCost variables: COGS, SG&A

Assigns a probability to individual values within a range -

Probability distributions: uniform, triangular, normal, log-normal

Calculation of NPV is repeated 500-1,000 times based upon random selection of probailityweighted values assigned to each variable, multiple NPVs are then plotted by frequencyof occurrence, indicating most likely NPV

Accuracy of NPV values is no better than accuracy of value ranges and probabilitiesassigned to individual values.


17/21

Patent Valuation

Real Options

Based on Black-Scholes formula for valuing stock options -

Five variables: (a) remaining development cost to commercialize IP; (b) meanmarket value of products embodying similar patents; (c) time until commercialutilization; (d) product value volatility; (e) risk-free rate of return; (f) patentexpiration

Option value resides in right to wait and see what happens to stockprice and to exercise or not based thereon

IP investment is viewed as an option to develop the IP further or to abandon itdepending on future technology and market information

RO is most useful for IP investments with long-term returns and high risks because itrecognizes that risk of IP investment is not uniform over time but decreases as additionaltechnical and market information becomes available


18/21

Patent Valuation

The Black-Scholes formula for valuing stock options

c t =S t N(h) Xe-rt

N (h - )

c = call option present value

S = market price of underlying stock

X = option strike price

= time until option must be exercised

2

= variance (variability) of underlying stock price return

r = risk free rate of return (e.g., rate offered on 5 year US bonds)

h = {ln (S/X) + r + 2 /2}/


19/21

Patent Valuation

Mapping the Black Scholes variables from the stock call option space to thepatent value space --

C becomes the present value of the patent(s)

S becomes the value of the underlying commercializable technology (market-driven meanenterprise value per product at launch) supplied by market data in the form of other pureplay companies with products in the same technology niche as subject patent

X becomes the remaining development cost to get to commercial product (covered by patent) supplied by patent owner

becomes the remaining development time until launch of product (covered by patent) supplied

by patent owner

2 becomes the variance of product value (ROI) vs. time

r (the risk-free rate of return) remains the same


20/21

Patent Valuation

Take Away:

The best that can be said about current methods of IP valuation isthat they are better than nothing -

(but how much better is a matter of substantial disagreement).

It is a sign of an educated mind not to expect more certainty from asubject than it can possibly provide . (Aristotle)

Valuation requires an intermediate perspective between ignorance and certainty, involving the exercise of skill, experience and judgment (Razgatis)


21/21

Patent Valuation

So, what about the role of claims construction? --

Present quantitative valuation methods are essentially actuarial in nature:

i.e., they deal with individual patents, and patent portfolios, on asemi-statistical basis, approximating value based on comparison

with past transactions involving similar patents, or using analogiesto other kinds of intangible rights (e.g., stock options).

In the future, economists and patent lawyers will work together to create avaluation that better reflects the exclusivity domain , i.e., the market, defined by

the patent claims.

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